A trademark is said to be infringed when a person, other than the registered proprietor, in the course of trade, in relation to the same good or services for which the mark is registered, user the same mark or a deceptively similar mark which is likely to cause confusion in the mind of the public or is like to cause impression of association of association with the registered trademark.
The following are the types in which a trademark may be infringed:
- DECEPTION OR CONFUSION AS TO GOODS: A person may buy the goods seeing a mark which he thinks belongs to a particular brand but it doesn’t. This is the most common type of confusion or deception.
- DECEPTION OR CONFUSION AS TO TRADE ORIGIN: A person, by looking at a particular mark, may think that it is coming from the same source as some other goods bearing a similar mark which he is familiar with. The deception or confusion is with respect to the origin of the trade.
- DECEPTION OF CONFUSION AS TO TRADE ORIGIN:Even though a person looking at the mark may not think that is the same as the one with a different brand in his mind, the similarity may make him believe that the two are connected in some way.
PASSING OFF OF TRADE MARK
This means that if one has a registered trademark and another sells goods or provides services under the same trademark without the permission of the first, there may be infringement of trademark. The law of passing off concerns unfair competition as in such a situation, the infringer benefits from the reputation of the origin associated with the registered trademark.
Passing off is a common law tort which can be used to enforce unregistered trademark rightswhere the second user an unregistered trademark of the first user and in doing so, misguides the public into thinking that the goods or services are being offered by the first. Passing off essentially occurs where the reputation of one business is misappropriated by the other party carrying on the same business, such that party B misrepresents the reputation and damages the goodwill of party A.
Second business by the infringer leads to:
- Misleading the public into thinking that the infringer’s goods are associated with the first one;
- Damages to the first one in terms of money and reputation.
WHO CAN SUE FOR INFRINGEMENT?
The following people are eligible to sue in case there is any passing off or infringement:
- Proprietor of the trademark;
- Legal successor/heirs of the proprietor;
- A registered user, only when the registered user has sent a notice to the infringer and consequently failed to take any action;
- If it’s a joint proprietorship, any of the proprietors
- A foreign proprietor a trademark registered in India, and when infringement occurs in India
The action against passing off lies in instituting a suit which is often combined into a suit for infringement and passing off to claim reliefs.